Edison: Describing A Design – When Enough is Enough! (Saidman et al.)

Perry J. Saidman

Kerry W. Leonard

Saidman Designlaw Group, LLC

In order to “promote the Progress of Science and useful
Arts,”2 the U.S. Constitution granted Congress the power
to create and legislate a federal patent system. The
resulting U.S. patent laws were clearly designed with the
purpose of incentivizing inventors to share their creations
with the public. Specifically, an inventor is granted a
limited monopoly on his or her invention provided that he
or she publicly discloses his or her new discovery by filing
for and obtaining a patent.

This quid pro quo exchange is the primary purpose
behind U.S. patent law. The ability to temporarily
exclude others from making or practicing an invention is
one of the best motivators to encourage an inventor to
divulge the secrets of his or her invention. Patents help to
shield their owners from competition by giving them a
time-limited, legal right to exclude others from making,
using, importing or selling the patented invention and, as
issued patent claims are presumed to be valid, patents
confer a significant advantage whenever infringement
proceedings are initiated.

Very few cases from the U.S. Court of Appeals for the
Federal Circuit have specifically interpreted this law as it
pertains to design patents; the majority of decisions focus
on utility patents. However, according to 35 U.S.C. § 171,
nearly all of the rules that govern utility patents are
applicable to designs. The few exceptions are noted in
Chapter 1500 of the Manual of Patent Examination
Procedure (MPEP).4 In particular, it is clear that § 112
applies to both utility and design patents. It has been left
to design patent practitioners to determine just how the
written description requirement translates when applied
in the design patent realm.

This paper will discuss the written description
requirement of § 112 as it applies to both utility patents
and design patents in order to draw parallels between the
two types of applications and to demonstrate how the
written description requirement for utility patents informs
and parallels the same requirement for design patents.

Meta

The JPTOS maintains this website for the purposes of providing basic information about Journal of the Patent & Trademark Office Society, for the convenience of our users. Publication of articles, blog entries, and other comments on this website are solely the opinions of the authors and should not be understood as an adoption of the Patent and Trademark Office Society of the views expressed therein. The views and comments expressed therein are solely the opinions of the authors and are not endorsed by, nor should be construed as any viewpoint official or unofficial of the United State Patent and Trademark Office. The information on this website originates from various sources, and may or may not be current and up-to-date. The JPTOS does not warrant or make representation as to the current accuracy or completeness of the information on this website. The JPTOS therefore will not assume any legal liability for any misrepresentation(s) that may occur. Further, the JPTOS and its employees shall not be held liable for any damage(s) resulting from any use of this website or from reliance on information contained within. Communications made through the e-mail or messaging system of this website shall in no way constitute "legal notice" to the JPTOS or any of its departments, officers, employees, agents, or representatives, where such notice to the JPTOS is required by any law, rule, or regulation. JPTOS does not guarantee the accuracy, quality, completeness, or reliability of such information and assumes no liability for any misrepresentations that may occur on these external sites. Further the JPTOS does not endorse any opinions or products associated with any of these external sites.